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How to make your mark with a UK registered design

UK registered design legislation is going to be amended to allow virtual or web marking of products. This will make it easier, on the one hand, for registered design owners to maintain up-to-date product information and will, on the other, provide more certainty and transparency for third parties.

Up until last year, the public could be notified that a product was patented, or was the subject of a pending patent application, if the product was marked with words such as “patent” or “patented” and the number of the patent or patent application. Whilst this remains an option, the Intellectual Property (IP) Act 2014, which entered into force last October, also permitted a patent owner/applicant to mark a product with a web page address. Details of any patent rights relating to a product or products can be listed on that web page.

The UK government has a programme for modernising registered design protection, which includes proposed changes to legislation, and improvements to the application procedure and back-end systems. It also invited comments on the possibility of introducing web marking for registered designs. Following the conclusion of this consultation the UK Intellectual Property Office has recently confirmed that the proposal was met with a lot of support and positivity. As such, the government intends to implement changes to existing legislation to permit web marking for registered designs, in a similar manner to that now allowed for patents.

This will make it easier for an owner of a UK or European Community registered design (or pending application) to keep the information that they share with third parties up-to-date, since information on a web page is much easier to maintain and update than anything physically printed or stamped onto a product. This is beneficial for design owners in two key regards. Firstly, marking or web marking a product is deemed to provide “constructive notice”, alerting third parties that a registered right exists. This is important because, under UK law, an “innocent infringer” – someone who infringes a registered right without realising they were doing so – is not liable for payment of damages in an infringement action. However, if a product is properly marked to provide constructive notice, the defence of innocent infringement cannot be used. Secondly, it is an offence under UK law to falsely mark a product as having registered protection when it does not. This applies even if a product was once protected, but that protection has lapsed or expired. It may be difficult and costly for an IP owner to change marking on products once their IP right is no longer in force, but not doing so may mean they are breaking the law.

As such, although marking is not mandatory in the UK, doing so when a valid IP right exists will increase the likelihood that the rights owner will successfully be able to claim damages from an infringer, and so marking is clearly advisable. Web marking provides the same advantage, but further facilitates keeping information up-to-date, reducing the chance of falsely representing a product as marked when that may no longer be the case. It can therefore save time and money. The requirements for web marking are also simple – the web page needs to be maintained, and the information kept up-to-date. For the benefit of third parties, the web page should also be accessible, free of charge, and clearly link the product that has been web marked with the associated registered design number(s).

The proposed changes, which bring the marking provisions of UK registered design law into line with UK patent law and mirror the successful approach taken in the US, provide clear benefits for owners of IP rights. It will also be possible for an IP right owner to have a single web page that lists both patent and design rights, further easing time and cost burdens. Perhaps for some though, advertising all of their registered IP in a single place may make it too easy for competitors to gain vital commercial information. In addition, there is also no provision for marking in relation to unregistered design rights, and there are no plans to implement such changes. This is mainly due to the fact that there are no “innocent infringement” provisions for unregistered design rights. This can lead to some grey areas, and uncertainty on how best to protect the various aspects of IP, so careful and considered management of all aspects of IP remains a priority.

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